Ex parte MARKS et al.

Board of Patent Appeals and Interferences

Jul 21, 1998

08132736 (B.P.A.I. Jul. 21, 1998)

Application for patent filed October 6, 1993. 1
According to appellants, the application is a continuation of
Application 07/969,920, filed November 2, 1992, now U.S.
Patent No. 5,391,793, issued February 21, 1995.
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte TOBIN J. MARKS, XINMIN YANG
and STANLEY B. MIRVISS
________________
Appeal No. 95-3845
Application 08/132,7361
________________
ON BRIEF
________________
Before KIMLIN, GARRIS and OWENS, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s refusal to allow
Appeal No. 95-3845
Application 08/132,736
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claims 1-5 as amended after final rejection. These are all of
the claims remaining in the application. Claim 1, which is
the only independent claim, is illustrative and reads as
follows:
1. A Ziegler-Natta or Kaminsky catalyst system for the
polymerization of olefins which comprises, as a cocatalyst, a
composition of matter which predominantly comprises
aryloxyaluminoxane containing at least one electron
withdrawing group.
THE REFERENCE
Tsutsui et al. (Tsutsui) 5,120,696 June 9,
1992
THE REJECTION
Claims 1-5 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Tsutsui.
OPINION
We have carefully considered all of the arguments
advanced by appellants and the examiner and agree with
appellants that the aforementioned rejection is not well
founded. Accordingly, this rejection will be reversed.
Appeal No. 95-3845
Application 08/132,736
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Tsutsui discloses an olefin polymerization catalyst
comprising a solid titanium catalyst component containing
titanium, magnesium and halogen as its essential components,
which supports 1) a transition metal compound containing a
ligand having a cycloalkadienyl skeleton and, if necessary, 2)
an organoaluminum oxy-compound (col. 3, lines 1-8). The
organoaluminum oxy-compound may be a known aluminoxane or a
benzene-insoluble organoaluminum oxy-compound which the
patentees state that they discovered (col. 8, lines 27-31).
The disclosed known aluminoxanes include dialkylaluminum
aryloxides (col. 8, line 55 - col. 9, line 3). The benzene-
insoluble organoaluminum oxy-compounds, the disclosure of
which is relied upon by the examiner in his rejection (answer,
page 3), include compounds having units which have an aryloxy
group with 6 to 20 carbon atoms (col. 10, line 51 - col. 11,
line 2). The units having an aryloxy group can be the
predominant component of the organoaluminum oxy-compound (col.
11, lines 2-11). Tsutsui does not disclose that the aryloxy
group can be substituted, let alone be substituted with an
electron withdrawing group.
The examiner argues (answer, pages 4-5) that
Appeal No. 95-3845
Application 08/132,736
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it would have been obvious to one having ordinary
skill in the art at the time the invention was made
to have used aryloxy groups with substitutents such
as halogens or alkyl groups in the catalyst system
of Tsutsui et al. because such substituted aryloxy
groups fit the general teaching. Any C6 to C20
aryloxy group (substituted of unsubstituted) would
be expected to function equivalently because of
their similar structures.
Appellants’ specification (page 2, lines 25-26) states
that alkyl groups are electron donating groups rather than
electron withdrawing groups, and the examiner has provided no
evidence to the contrary. Thus, the record indicates that
even if the aryloxy groups disclosed by Tsutsui were
substituted with alkyl groups as argued by the examiner
(answer, page 5), appellants’ claimed invention would not be
produced.
As for the examiner’s statement that substituted and
unsubstituted aryloxy groups would be expected to function
similarly because of their similar structures, a predecessor
of our reviewing court has stated that “[w]hen the PTO seeks
to rely upon a chemical theory, in establishing a prima facie
case of obviousness, it must provide evidentiary support for
the existence and meaning of that theory. [citation omitted]
The known structural relationship between adjacent homologs,
Appeal No. 95-3845
Application 08/132,736
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for example, supplies a chemical theory upon which a prima
facie case of obviousness of a compound may rest.” In re
Grose, 592 F.2d 1161, 1167-68, 201 USPQ 57, 63 (CCPA 1979).
The examiner has set forth no evidentiary support for his
theory that Tsutsui’s unsubstituted aryloxy groups are
structurally similar to aryloxy groups which are substituted
with at least one electron withdrawing group and, therefore,
would have been expected to function similarly, and we are
aware of none.
Accordingly, we conclude that the examiner has not
carried his burden of establishing a prima facie case of
obviousness of appellants’ claimed invention.
DECISION
The rejection of claims 1-5 under 35 U.S.C. § 103 over
Tsutsui is reversed.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
Appeal No. 95-3845
Application 08/132,736
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BRADLEY R. GARRIS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
TERRY J. OWENS )
Administrative Patent Judge )
Appeal No. 95-3845
Application 08/132,736
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Richard P. Fennelly
Akzo America Inc.
7 Livingstone Avenue
Dobbs Ferry, NY 10522